Appeal No. 1999-1730
Application No. 08/478,205
Such is the case here. The cited references disclose that specific
substitutions of specific amino acid residues of P. plagiophthalamus luciferase
change the color of the light produced by the enzyme. The references do not
suggest, however, that other substitutions at those positions would also affect the
color of the emitted light. In particular, the references do not suggest any of the
thirteen specific substitutions recited in claim 33. The references may have
made it obvious to try making different substitutions at these positions, to see
what effect various changes would have; they may even have provided a basis to
expect that some of those substitutions would affect the color of the emitted light.
But the references do not suggest the specific substitutions required to make the
claimed products. Therefore, they support at best an “obvious to try” rationale,
and “‘obvious to try’ is not the standard under § 103.” In re O’Farrell, 853 F.2d at
903, 7 USPQ2d at 1680.
The same is true for the rest of the rejected claims. The cited references
may have made it obvious to try varying other amino acids in the luciferase
enzyme, to find out which if any affected the color of the emitted light, but nothing
in the references suggests altering the specific amino acid positions recited in
claim 1. We disagree with the examiner’s reading of the critical paragraph in the
Wood dissertation. In relevant part, that passage states:
The three substitutions that cause most of the color shift between
yellow-green and orange are located in a 25-amino acid segment of
the sequences, from positions 223-247. The probability of this
occurring by chance is about 0.01. . . . [I]t is likely that this region
contains many, if not most, of the potentially suitable amino acids
that affect the color of luminescence. It is expected that such a
region would be close to the binding site of luciferin.
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